Yes, There Really Is a Trademark Battle over “Kentucky” Going On
Crystal Broughan, Intellectual Property Attorney Aug 27, 2021 in Intellectual Property
You probably intuitively know that state names are closely intertwined with the universities and athletic teams that reside within them. It is also understandable that the state itself (the government) might want to use the state name for branding efforts.
Because of this, one might assume that the overlap of marks is a given — and that both parties would approach it with generosity. Yet it seems that the University of Kentucky has taken a more territorial stance in its trademark lawsuit against the Commonwealth of Kentucky.
Does “Team Kentucky” Make You Think of the University of Kentucky?
The suit addresses the usage of the word “Kentucky” on clothing. Specifically, the state has applied for a trademark application to use the phrase “Team Kentucky” on t-shirts, sweatshirts, caps, and other apparel. The University of Kentucky asserts that this would lead consumers to believe the clothing represents the school.
The university bases its opposition on the following detailed grounds:
- Priority and likelihood of confusion
- No use of mark in commerce before application was filed
- False suggestion of a connection — in this case, with an institution
The university has centered the opposition on the word “Kentucky”. They presume that they have national ownership of the state name on clothing items. Their claim rests on using “Kentucky” on athletic uniforms — jerseys, sweatshirts, hats — since at least December 1, 1940. This was prior to an official trademark registration in June of 1997.
However, the State of Kentucky’s trademark application sits slightly askew of that opposition since it contains the word “Team”.
Lexington-based trademark attorney Josh Gerben weighed in on the suit’s advancement as “likely to fail” because “there are many other KENTUCKY-formative marks in the clothing space.” He also added (with a bit more glibness): “It is a head-scratcher as to why the case even got this far… The parties presumably were in settlement talks before a formal legal action was filed. Grab your popcorn!”
Despite Gerben’s clear amusement at the situation, it is an interesting case, and it will be fascinating to see how it all shakes out — particularly for the other 49 states and countless cities that share names with universities and colleges.Share